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Supplemental Protection Certificates - Eli Lilly and Co. v Genentch Inc

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Jane Lambert

Patents Court (Mr Justice Arnold) Eli Lilly And Company v Genentech, Inc No. 2 [2019] EWHC 388 (Pat) (1 March 2019)

One of the issues before Mr Justice Arnold when he tried Eli Lilly and Company and others v Genentech, Inc [2019] EWHC 387 (Pat) (1 March 2019) was whether Genentech was entitled to a supplemental protection certificate ("SPC").

A guidance note from the IPO published on 16 May 2014 and last updated on 27 June 2019 describes an SPC as a "form of IP that extends the protection of patented active ingredients present in pharmaceutical or plant protection products." The policy behind SPCs is as follows:

"Pharmaceutical or plant protection products need regulatory approval to be sold in the UK and must obtain:
a marketing authorisationor product licence If your patent protects the active ingredients used in these products, this requirement can delay you using the patent.

A Supplementary Protection Certificate (SPC) compensates for the delay.…

Patents - Eli Lilly v Genentech

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Jane Lambert

Patents Court (Mr Justice Arnold) Eli Lilly and Co. and others v Genentech Inc [2019] EWHC 387 (Pat) (1 March 2019)

This was a claim for the revocation of Genentech Inc.'s European patent EP1641822 for heterologous polypeptides and therapeutic uses thereof on grounds of want of novelty, obviousness and insufficiency and a declaration of non-infringement of the patent; Genentech counterclaimed for infringement alleging that Lilly's product Ixekizumab marketed under the trade mark Taltz infringed its patent. The action and counterclaim came on before Mr Justice Arnold as he then was. The judge also had to decide whether Genentech was entitled to a supplemental protection certificate in relation to the patent. His lordship dealt with that issue in a separate judgment (see Eli Lilly And Company v Genentech, Inc No. 2 [2019] EWHC 388 (Pat) (1 March 2019) which I discussed in Supplemental Protection Certificates - Eli Lilly and Co. v Genentech Inc. 18 July 2019).

Com…

Confidentiality Clubs - Illumina v TDI Genetics

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Patents Court (Mr Justice  Mann) Illumina, Inc. and Another v TDL Genetics Ltd and Others [2019] EWHC 79 (Pat) (22 Jan 2019)

CPR 31.6 requires a party to litigation to disclose to his or her opponent not only the documents on which he or she relies but also the documents which adversely affect his or her own case or that of another party, support the case of another party or any document that he or she is obliged to disclose by a relevant practice direction. 

Sometimes such a document contains a trade secret or other confidential information.  When that happens the court is presented with what Lord Justice Buckley called in Warner-Lambert Co. v Glaxo Laboratories Ltd. [1975] RPC 354, 356 "a balance or conflict of expedients." In that case, the defendant asserted that the documents that the claimant sought to inspect contained "secrets of considerable commercial value".  The learned lord justice continued:

"The [claimant] is entitled to be protected against inf…

Woof! The Kennel Club v Micro-ID Ltd

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Jane Lambert

Intellectual Property Enterprise Court (Mr Recorder Campbell) The Kennel Club Ltd v Micro-ID Ltd [2019] EWHC 1639 (IPEC) (25 June 2019) 

The Kennel Club is the UK authority for dog breeding, dog shows and other matters relating to dogs. One of its services is Petlog which indexes data held on chips that are implanted into dogs and other pets. Petlog helps police and other agencies restore lost or stray pets to their keepers. The defendant company, Micro-ID Ltd, is one of a number of businesses that implant chips into animals. The Kennel Club charges implanters such as Micro-ID a fee for entering chip data into Petlog pursuant to a contract known as the Reunification Database Management Agreement.

The Kennel Club sued Micro-ID for £123,843.03 for moneys due under that agreement or, alternatively, by way of damages for breach of contract.  Micro-ID did not dispute that those moneys were due but contended that the claim was subject to a set-off for breach of contract and/or i…

Patents: Prosyscor Ltd v Netsweeper Inc and others

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Jane Lambert

Intellectual Property Enterprise Court (HH Judge Hacon) Prosyscor Ltd v Netsweeper Inc and others [2019] EWHC 1302 (IPEC) (22 May 2019)

This was a claim under s.12 of the Patents Act 1977.  The claimant was a company which one Bradley Kite had set up to develop and exploit his inventions. Mr Kite alleged that he had invented a policy service authorization and authentication for which the second defendant had applied for patents in a number of countries including the UK through the Patent Cooperation Treaty under international application number WO 2013/177687 A1 The first defendant was the second defendant's holding company and the third  was an employee of the first defendant who is named as inventor.

S.7 (2) (a)  of the Patents Act 1977 provides that a patent for an invention may be granted primarily to the inventor or joint inventors, that is to say, the actual deviser or devisers of the invention (see s.7 (3)).  However, that rule is subject to s.7 (2) (b) which pro…

Practice and Procedure: Glass Slipper Ltd and another v Rimson Flower Productions Ltd and others

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Jane Lambert

Intellectual Property Enterprise Court (Judge Hacon) Glass Slipper Ltd and another v Rimson Flower Productions Ltd and others [2019] EWHC 1273 )IPEC) (20 May 2019)

Had it ever cleared the ground this might have been a very interesting action. The first claimant called itself Glass Slipper Limited which suggested a connection with Cinderella. English National Ballet has recently staged a beautiful production of Cinderella choreographed by Christopher Wheeldon in the Albert Hall which I reviewed in my dance blog (see Jane Lambert Cinders in the Round13 June 2019 Terpsichore).

Sadly the case had nothing to do with Cinderella though it appears to have been about the copyright in a film of a performance of Swan Lakeby the Mariinsky Ballet at its theatre in St Petersburg on 6 June 2013.  That could have been interesting too because the Mariinsky is the successor to the Russian Imperial Ballet which staged Marius Petipa's version at the Mariinsky Theatre on 15 Jan 1895. One …

Copyright in Antlers: ATB Sales Ltd v Rich Energy Ltd and Others

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Jane Lambert

Intellectual Property Enterprise Court (HH Judge Melissa Clarke) ARB Sakes Ltd v Rich Energy Ltd. and Others[2019] EWHC 1207 (IPEC) 9 May 2019

This was a copyright infringement claim. The claimant trades as Whyte's Bikes and if you visit its website you should see a very distinctive antler logo. That was designed by two of its employees, Guy Farrant and Mark Morgan. The first defendant supplies an energy drink known as Rich Energy which it promotes with a racing car.  If you visit its website right now (but probably not for much longer) you will see a not dissimilar logo. The claimant claimed that the first defendant had copied the artwork for its logo. As the first defendant had registered that logo as a trade mark, the claimant applied for it to be declared invalid on the ground that its use was liable to be prevented by the law of copyright pursuant to s.5 (4) (b) of the Trade Marks Act 1994.

The Issues
The second defendant was the sole director and shareholder of th…